Appeal No. 1996-3794 Page 4
Application No. 08/212,698
OPINION
We have carefully considered all of the arguments advanced by appellant and the
examiner and agree with appellant that each of the aforementioned rejections under 35
U.S.C. §§ 103 and 112 are not well founded. Accordingly, we do not sustain the examiner's
rejection.
The Rejections under § 112
Any analysis of the claims for compliance with 35 U.S.C. § 112 should start with the
second paragraph, then proceed with the first paragraph. In re Angstadt, 537 F.2d 498,
501, 190 USPQ 214, 217 (CCPA 1976). The legal standard for definiteness under the
second paragraph of 35 U.S.C. § 112 is whether a claim reasonably apprises those of
ordinary skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). Furthermore, the definiteness of the language employed must
be analyzed not in a vacuum, but in light of the teachings of the particular application. In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
It is the examiner’s position that claims 13 and 19 are directed to the term,
“disinfection,” which is unsupported by the remainder of the claim. See Supplemental
Answer, mailed January 25, 1996, page 4. The issue however is not whether the term,
“disinfection” is supported by the remainder of the claim, but whether the teachings of the
specification are such that one of ordinary skill in the art would be apprised of the scope of
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